Friskit, Inc. v. RealNetworks

The opinion of the court was delivered by: Fern M. Smith United States District Judge

ORDER EXCLUDING DEFENDANTS' USE OF EXPERT TESTIMONY IN CERTAIN CLAIM CONSTRUCTION PROCEEDINGS

This order responds to Friskit's letter brief, filed March 15, 2005, requesting the Court to exclude RealNetworks' ("Real") use of expert testimony in the claim construction proceedings due to its failure to comply with the Patent Local Rules addressing expert disclosure and claim construction discovery. Reviewing Friskit's letter brief, and Real's response, the Court finds that Real's disclosure was both untimely and insufficient, resulting in prejudice to Friskit, and therefore EXCLUDES defendants' expert from the claim construction briefings and Markman hearing.

Local Patent Rule 4-3(b) requires that the Joint Claim Construction and Prehearing statement contain "an identification of any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction of the claim, or to oppose any other party's proposed construction of the claim, including...testimony of percipient and expert witnesses." Following this rule, Real was required identify any experts it expected to use in its claim construction. Reserving the right to use an expert, without more detail, fails to meet this requirement.

Furthermore, Local Rule 4-3(d) requires that if a party proposes to call an expert witness, the party must provide both the identity of the witness and "a summary of each opinion to be offered in sufficient detail to permit a meaningful deposition of that expert...." Again, reserving the right to use an expert, without addressing the specifics of his/her testimony, fails to comply with the local rule.

Friskit argues that because Local Patent Rule 4-4 required that all discovery occur "not later than 30 days after service and filing of the Joint Claim Construction and Prehearing Statement," it has lost its opportunity to meaningfully depose Real's expert witness, and is thereby prejudiced by Real's failure to follow the local patent rules. The Court agrees.

In order to use an expert witness in claim construction proceedings, the proponent of such evidence must offer opposing counsel sufficient detail to allow them to conduct meaningful discovery. See Patent Local Rule 4-3(d). Real's failure to provide meaningful and timely information about its expert denied Friskit a reasonable opportunity to conduct discovery into the expert's opinions. Even though RealNetworks argues that they "expressly reserved its right to submit an expert declaration in support of its claim construction brief," RealNetworks Letter Brief at 3, Real had no authority to expand the local rules of the Court in this matter, unilaterally granting themselves the right to use an expert witness without adhering to the necessary disclosures. Further, without the necessary disclosures required by Local Rule 4-3(d), Friskit's deposition of Real's expert would have been meaningless and time consuming.

Real argues that Local Rule 4-3(d) only applies when a party intends to "call" the witness at the claim construction hearing, and does not apply in situations where a party intends to rely on its expert's declaration and not his/her live testimony. Read in the context of the local rules, however, this interpretation is incongruent with the intent of the rules which were designed to streamline the complexities of patent cases, encouraging the disclosure of information before the claim construction hearing. Whether the expert testifies in court or by declaration, the result is the same: the sworn testimony of an expert is part of the claim construction record. Thus, the 4-3(d) requirements apply to any sworn testimony offered as substantive evidence.

In light of Real's failure to comply with the patent local rules, the Court GRANTS Friskit's request by excluding the declarations and testimony of Real's experts who have not been properly disclosed as required by the local rules. Real's expert will be excluded from: 1) Real's opposition to Friskit's opening Markman brief and 2) the Markman hearing, currently scheduled for April 12, 2005. Real's expert will not be excluded from the Markman tutorial, currently scheduled for April 11, 2005, because the tutorial is outside the scope of the local patent rules.

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